WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini
Case No. D2000-0928
1 The Parties
The Complainant is:
3420 Central Expressway
Santa Clara, California 95051
David M. Kelly, Esq.
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
1300 I Street, NW
Washington, D.C. 20005-3315
The Respondents are:
Cupcake Patrol and John Zuccarini
957 Bristol Pike, Suite D-6
Andalusia, PA 19020
2. The Domain Names and Registrar
The domain names in dispute are:
The Registrar for the disputed domain names is :
CORE Internet Council of Registrars
WTC ll, 29 route de Pre-Bois
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerí s Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on August 7, 2000. Also on August 7, 2000, the Center requested that the Registrar CORE check and report back on the registrant for the twenty-three (23) disputed domain names set out above in Part 2. On August 9, 2000, CORE reported back that the registrants were the Respondents, Cupcake Patrol and John Zuccarini.
On August 11, 2000, the Center forwarded a copy of the Complaint to Respondents by registered mail and by e-mail and this Proceeding officially began. Respondents did not file a Response, and were declared in default on September 1, 2000.
The Administrative Panel submitted a Declaration of Impartiality and Independence on September 3, 2000, and the Center proceeded to appoint the Panel on September 15, 2000. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by September 29, 2000.
4. Factual Background
The Complainant, Yahoo!, Inc., is an internet company that offers a wide range of services such as internet searching and shopping. Complainant began doing business in 1994 as a web directory and search engine company. Complainant has registered many service marks, trademarks and domain names in connection with its internet services. For example, "Yahooligans.com" is a site for children and "travel.yahoo.com" is a site for travel services.
Respondents have registered the twenty-three (23) domain names listed in Part 2 above that are derived from Complainantís trademark, "Yahoo!". In this proceeding, Complainant is seeking to have the disputed domain names transferred to itself.
5. The Partiesí Contentions
Complainant is the owner of many federal trademarks based on "yahoo" such as Registration No. 2,040, 222 for the mark "Yahoo" issued on February 25, 1997 covering computer software, International Class 42; or Registration No. 2,159, 115 for the mark "Yahoo" issued May 19, 1998 covering electronic mail services in International Class 38 (Complaint Exhibit 10).
Respondents have registered domain names confusingly similar to Complainantís trademarks. Some of Respondentsí sites redirect to some of Complainantís websites. All of Respondentsí infringing domain names show the viewer additional "pop-up" windows containing websites and advertising for third parties selling various goods and services, including credit card services, auction services, online greeting card services, free music videos, and games that can be downloaded.
Complainant further contends that when users attempt to click forward to Complainantís websites or back to their browsersí main window, Respondents have arranged that additional windows open containing third-party websites and advertisements, a practice known as "mousetrapping" (Complaint Exhibit 11).
As a result of Respondentsí activities, internet users may mistakenly enter one of Respondentsí disputed domain name web sites instead of, or before being forwarded to, Yahoo!ís own websites. However, when the additional windows pop up containing advertisements for third-party goods and services, these internet users are likely to be misled into believing Complainant sponsors or endorses these advertisers and their goods and services.
Respondentsí pop up web sites directly and unfairly compete with Complainant by offering services identical or closely related to those offered by Complainant.
On March 29, 1999, Complainant counsel sent a cease and desist letter to Respondent John Zuccarini, demanding that he discontinue linking the "Yahootravel.com" domain name to a website offering pornography, and that he transfer the domain name to Complainant. (Complaint Exhibit 12). On March 31, 1999, Zuccarini sent a reply stating that forwarding seekers of Complainantís site to a pornographic website was a mistake, that he redirected the domain name to Yahooís travel site, and that he would initiate the procedure to transfer the domain name to Complainant (Complaint Exhibit 13). Complainant contends Respondents never transferred the domain name "Yahootravel.com" as promised.
Respondents continued to register new Yahoo-formative domain names despite Yahooís numerous and clear objections.
Respondents are known, prolific cybersquatters who register domain names consisting of well-known trademarks owned by others and celebrity names.
In addition to their misappropriation of the famous "Yahoo!" and "Yahooligans!" marks, Respondents have registered variations of the following famous trademarks, trade names, and celebrity names as domain names: "Disney, Sony, Blue Mountain Arts,
Hewlett-Packard, National Car Rental, Britney Spears, Salma Hayek, Oprah Winfrey, Jennifer Lopez, Star Wars, Mayo Clinic, Michael Jordan, Ally McBeal, Ricky Martin, USA Today, Taco Bell, Austin Powers, Microsoft, and Playboy". (Complaint, Exhibits15, 16, 17, 18 and 19).
A United States Federal District Court recently found Respondent John Zuccariniís activities to constitute "cybersquatting" under the Anticybersquatting Consumer Protection Act. In Shields v. Zuccarini, 54 U.S.P.Q. 2d 1166 (E.D. Pa. 2000), the court found that Zuccariniís registration of domain names containing variations of the famous "Joe Cartoon" mark, and use of the domain names to identify websites featuring advertisements for other websites and credit companies constituted a bad faith intent to profit. The court also noted that as a result of misdirecting Internet users to his sites where they are forced to view advertisements, Zuccarini makes nearly $1 million per year. (Complaint Exhibit 20).
Respondents have been the subject of at least four (4) decisions against them under the Policy. (For example, Hewlett-Packard Company v. Cupcake City, NAF File No. FA0002000093562, Complaint Exhibit 21).
At the time Respondents registered the domain names, they had actual knowledge of Complainantís rights to the "Yahoo" mark.
Respondentsí registration and use of the disputed domain names meets the bad faith element set forth in Section 4(b)(iv) of the Policy. Specifically, Respondents use the disputed domain names to intentionally attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with Complainantís marks as to the source and/or endorsement of Respondentsí pop up websites and the advertisements of the services offered at those sites.
Complainant further contends that Respondentsí registration and use of the domain names meet the bad faith element set forth in Section 4(b)(iii) of the Policy. By attracting Internet users away from Complainantís websites to their own websites, Respondents showed that their registration and use of the domain names was primarily for the purpose of disrupting the business of competitors. According to Complainant, both Complainantís websites and Respondentsí pop up websites offer many of the same services, including games, music, auction services, credit card services, and electronic greeting cards.
Respondents registered the disputed domain names in order to trade on the goodwill of Complainant and its marks and names.
Pursuant to Section 4(c) of the Policy: (i) Respondents have not used the disputed domain names in connection with a bona fide offering of goods or services; (ii) Respondents are not and have not been commonly known by the disputed domain names; and (iii) Respondents are not making legitimate noncommercial or fair use of the disputed domain names but are instead seeking commercial gain.
Complainant requests the Panel compel Respondents to reveal all the domain names Respondents have registered involving Complainantís "Yahoo!" and "Yahooligan" marks (Complaint, para. 63).
Complainant contends the disputed domain names should be transferred to Complainant.
Respondents have not filed a Response and have been declared in default in this Proceeding.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names transferred to it, Complainant must prove the following (the Policy, 4(a)(i-iii):
Identical or Confusingly Similar
Complainant has provided copies of several of its trademark registrations for the trademark "Yahoo!" and for other marks built around this name such as "Yahooligan" (Complaint Exhibit 10). All twenty-three (23) disputed domain names registered by Respondents, to wit, "YAHHOLIGANS.COM", "YAHOEMAIL.COM", "YAHOFINANCE.COM", "YAHOGAMES.COM", "YAHOLLIGANS.COM", "YAHOMAPS.COM", " YAHOOAGANS.COM", " YAHOOCHATT.COM",
"YAHOOGANS.COM", " YAHOOGREATINGS.COM", "YAHOOGRETINGS.COM", "YAHOOGRETTINGS.COM" "YAHOOLAGAINS.COM", "YAHOOLAGIANS.COM"
"YAHOOLAIGANS.COM" , " YAHOOLGAINS.COM",
YAHOOLGIANS.COM", " YAHOOLIAGANS.COM" "YAHOOLIGAINS.COM" "YAHOOLIGIANS.COM", "YAHOOMESSENGER.COM", "YAHOOMESSAGER.COM", " YAHOOMESSINGER.COM" , are composed of a version of Complainantís trademark plus a generic word (at times deliberately misspelling the former or the latter or both). The panel finds the misspelling of no significance in determining whether Respondentsí disputed domain names are identical or confusingly similar to Complainantís "Yahoo!" trademark because Complainantís famous trademark forms the nongeneric part of each and every one of the disputed domain names.
The Panel finds Respondentsí disputed domain names are, all twenty-three (23) of them, at best confusingly similar to Complainantís famous "Yahoo!" trademark.
Legitimate Rights or Interests
Complainant denies that Respondent ever had any type of license or permission from Complainant to use the trademark "Yahoo!". Respondent is in default and hence did not contest Complainantís contentions in this regard.
In addition, it appears to the Panel that, in the context of the disputed domain names, Respondentís only business is to interfere with the web traffic to Complainantís and other famous web sites, a factor the Panel will discuss further in the Bad Faith Section below.
The Panel finds Respondents have no rights or legitimate interests in the disputed domain names.
Registered and Used in Bad Faith
Complainant has produced overwhelming evidence that Respondents have registered the disputed domain names with the aim of attracting the public interested in reaching Complainant, Yahoo!, Inc., and its services. The Panel can see that Respondents registered these twenty-three (23) domain name variations on Complainantís famous trademarks in order to intercept internet traffic seeking Complainantís websites. And even though Respondentsí scheme does at times allow searchers eventually to reach Complainantís websites, in the process Respondent exposes the searchers to a barrage of Respondentsí clientsí advertising. On at least one occasion, fully acknowledged by Respondents, one of Respondentsí websites was routing "Yahoo!" traffic to a porno site (Complaint, Exhibits 12,13). This is trademark tarnishing contravening the Policy (4(c)(iii)).
The Panel finds Respondents have registered and used the disputed domain names in bad faith because, as proscribed by the Policy (4(b)(iv)), Respondents have implemented a vast scheme infringing Complainantís famous marks to attract Complainantís customers to Respondentsí web sites so that Respondents can sell advertising.
Complainantís request that the Panel somehow force Respondents to reveal all domain names they have registered involving Complainantsí marks is denied as it is deemed by the Panel to be unnecessary for this Decision.
Pursuant to ICANN Policy para 4(i) and Rule 15, this Panel orders that the twenty-three (23) disputed domain names:
all be turned over to Complainant, Yahoo!, Inc. These domain names are confusingly similar to Complainantís famous trademarks. In addition, the Respondents, John Zuccarini and his entity Cupcake Patrol, are found to have no legitimate rights or interests in the disputed domain names, and are found to have registered and to be using the domain names in bad faith.
Dennis A. Foster
Date: September 29, 2000